With a population of 1.4 billion China represents an attractive market for many businesses. However there are numerous potential pitfalls to be wary of and below we outline the most important areas that your trademark strategy should encompass.
Register your trademarks in China as soon as possible
China has a “first to file” trademark system which means that they do not recognise unregistered or common law trademark rights. This makes it imperative to register your trademarks as early as you possibly can. Additionally, trademark squatting in China is widespread and numerous Western companies have discovered that an unknown Chinese entity has already registered their English trademark, the Chinese characters equivalent and sometimes also the transliteration and translation.
The most high-profile example of this was Apple Inc paying $60 million to settle a dispute in China over ownership of the iPad name with Shenzhen Proview Technology in China.
What you can do if your trademarks have already been registered by an unrelated Chinese entity
(1) If the trademarks are still in the publication period you can file an opposition with the China Trademark Office.
(2) If it has been less than 5 years since registration date you can file invalidation procedures with the Trademark Review and Adjudication Board (TRAB) against the squatting trademarks. The 5 year limitation does not apply if the trademark was recognised as a well-known brand at the time of filing.
(3) You can consider filing a three year non-use revocation of the trademarks if applicable.
(4) You can attempt to purchase the trademarks from the registered owner.
(5) The last option is to completely re-brand your goods/services within China.
Register both English and Chinese versions of your trademarks
It is highly recommended that you register your trademark in English characters, in Chinese characters and also in the Mandarin word that sounds closest to your trademark. This will ensure the broadest possible protection for your trademarks and help to minimise the ability of trademark squatters to infringe upon your brands.
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